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In December 2014 President Obama eased diplomatic relations between the United States and Cuba. This raised concerns that this could result in US brands or brands that are popular in the US being targeted by trade mark squatters. These concerns are now beginning to be realised but due to applications being filed by non-Cuban entities rather than by Cuban applicants.

Cuba is becoming an increasingly popular tourist destination and is likely to become an increasingly important country for business, given its close proximity to the US. It therefore ought to be of concern to brand owners, especially US brand owners, or those for whom the US is a key market, that third parties are seeking to register their brands in Cuba. This could result in a brand owner having its mark used on an inferior product, potentially damaging its reputation, or it could result in the brand owner being blocked from manufacturing or exporting its goods in Cuba.

If brand owners have already fallen victim to a trade mark squatter in Cuba they have a number of options. It may be possible to oppose the application on the basis it has been filed in bad faith which will be easier for well-recognised brands. If the trade mark in question is a trade name, or if there is copyright in the trade mark concerned, it may be possible to take action under the Cuban trade mark regulations. Another but slightly less certain option is to file an opposition on the basis of US trade mark registration under the Panamerican Convention. However, although the Convention is available, it is not certain whether or how it would be implemented by the Cuban IP Office.

The best case scenario is that this warning reaches brand owners before their brands are targeted. If so, brand owners ought to consider filing their trade marks in Cuba, or possibly refiling if they have old registrations that may be vulnerable to revocation (three years non-use), whether they are doing business in Cuba or not (actual use or intent to use is not needed to file a trade mark application in Cuba). Alternatively, at the very least, brand owners should conduct regular monitoring in Cuba as failure to do so could mean higher enforcement costs down the road.

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